Ex Parte Coffin et al

Patent Trial and Appeal Board

May 22, 2018

14730306 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
141730,306 06/04/2015
66376 7590 05/24/2018
ALLEGHENY TECHNOLOGIES INCORPORATED
1000 SIX PPG PLACE
PITTSBURGH, PA 15222-5479
Scott Coffin
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
TWC-2208DIV2/l 10551DIV2 1252
EXAMINER
WALCK, BRIAND
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
05/24/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
maria.dunn@atimetals.com
A TIDocketing@atimetals.com
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT COFFIN and ARNEL M. FAJARDO
Appeal2017-008262
Application 14/730,306
Technology Center 1700
Before JEFFREY T. SMITH, A VEL YN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to twice reject claims 1-7. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
The claimed invention produces zirconium metal by reacting
zirconium tetrachloride with a magnesium reductant and separating at least a
portion of the zirconium metal from the reaction products. Spec. i-f 11. The
Specification recognizes the basic process of reacting a magnesium
reductant with zirconium tetrachloride to obtain zirconium metal as a typical
process based on a well-known adaptation of the Kroll reduction process.
Appeal2017-008262
Application 14/730,306
Id. i-fi-1 4, 7, 9. The Specification also recognizes the importance of
eliminating impurities from the zirconium metal, particularly impurities
contained in the magnesium reductant. Id. i-fi-1 4--7. Thus, the claimed
method uses a magnesium reductant having reduced levels of impurities.
Spec. i-fi-18-9. Independent claim 1 illustrates the subject matter on appeal
and is reproduced below:
1. A method of producing zircomum metal, the method
compnsmg:
reacting zirconium tetrachloride with magnesium reductant,
wherein the magnesium reductant comprises greater than 1000 up to
3000 ppm zirconium, 0 to 0.007 weight percent aluminum, and no more
than 50 ppm hafnium, to provide reaction products compnsmg
zirconium metal and magnesium chloride salt; and
separating at least a portion of the zirconium metal from the
reaction products.
Appellant 1 requests review of the Examiner's rejection of claims 1-7
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Kwon (US
4,668,287, issued May 26, 1987) and Shoji (JP H02-47237 A, published
February 16, 1990, and relying on an English language translation provided
by Appellant on November 18, 2015). App. Br. 3; Non-Final Act. 4--7.
1 ATI PROPERTIES, INC. is the Applicant/Appellant. ATI Properties LLC
is identified as the real party in interest. App. Br. 1.
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OPINION
Prior Art Rejection
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's prior art rejection of claims 1-7
under 35 U.S.C. § 103(a) for the reasons presented by the Examiner. We
add the following for emphasis.
Claim l2
The Examiner finds Kwon discloses a method of producing zirconium
metal comprising the steps of reacting zirconium tetrachloride with a
magnesium reductant to provide reaction products comprising zirconium
metal and magnesium chloride salt and separating at least a portion of the
zirconium metal from the reaction products. Non-Final Act. 4; Kwon Abst.,
col. 3, 1. 32---col. 4, 1. 61. The Examiner finds Kwon does not disclose using
a magnesium reductant comprising greater than 1000 up to 3000 ppm
zirconium. Non-Final Act. 4. The Examiner finds that Shoji discloses a
purified magnesium formulation that can have 3000 ppm zirconium and
unavoidable impurities, including aluminum, within a range of less than
0.1 %. Non-Final Act. 4; Shoji 3--4. The Examiner determined that it would
have been obvious to one skilled in the art to use Shoji's magnesium
formulation in place of Kwon's magnesium formulation because Kwon
teaches that any commercial magnesium with less than 100 ppm is a suitable
2 Appellant presents arguments only for independent claim 1. App. Br. 12.
Accordingly, we limit discussion to this claim as representative of the
subject matter before us for review on appeal. Claims 2-7 stand or fall with
independent claim 1.
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Application 14/730,306
as the magnesium reductant in the method of Kwon and the magnesium of
Shoji can have less than 100 ppm. Non-Final Act. 4; Kwon col. 3, 11. 45-55.
Appellant principally argues that Shoji's aluminum content in the
disclosed magnesium formulation does not overlap the aluminum content of
the claimed purified magnesium formulation (0 to 0.007 weight percent).
App. Br. 8. According to Appellant, Shoji discloses that the aluminum
content in its magnesium formulation can be as high as 0 .1 wt.% and as low
as 0.02 wt%, based on Example 1, where the 0.02 wt.%, amount that is
almost three times greater than the upper limit of the aluminum level recited
in the present claims. Id. at 9. Thus, Appellant argues Shoji actually teaches
an aluminum content of 0.02 up to 0.1 wt.% and therefore clearly teaches
away from the claimed invention. Id.
We are unpersuaded by these arguments. It is well settled that a
reference may be relied upon for all that it discloses and not merely the
preferred embodiments as suggested by Appellant. See Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[A]ll disclosures
of the prior art, including unpreferred embodiments, must be considered."
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re
Fracalossi, 681 F.2d 792, 794 n.1(CCPA1982) (explaining that a prior art
reference's disclosure is not limited to its examples).
As noted by the Examiner, Shoji discloses a magnesium having
unavoidable impurities, including Al, within a range of less than 0.1 %.
Non-Final Act. 4; Shoji 4. Therefore, Shoji's magnesium formulation can
have zero or very little aluminum. Cf In re Mochel, 470 F.2d 638, 640
( CCP A 1972) (explaining that the term "up to" includes zero as a lower
limit). While Appellant contends that the lower level of Shoji's range for
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the aluminum content is 0.02% based on Example 1 (App. Br. 9; Shoji 6
(Table 1 )), Appellant has not directed us to any portion of Shoji that
supports this contention. Further, Appellant has not adequately explained
how the preferred embodiment of the cited art detracts from its broader
teaching of an aluminum content of less than 0.1 weight %. Appellant has
not adequately shown that Shoji's aluminum content range of less than 0.1
weight percent does not overlap the claimed range of 0 to 0.007 weight
percent.
Moreover, the broader disclosure of Shoji would guide one of
ordinary skill to a magnesium formulation having the claimed aluminum
content. The prior art discloses a desire to minimize impurities that would
have guided an ordinary artisan to optimize the magnesium formulation by
minimizing the impurities to avoid impairing the formulation and, thus,
predictably achieve a magnesium formulation that exhibits high purity
attributes. Shoji 4; In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)
("The normal desire of scientists or artisans to improve upon what is already
generally known provides the motivation to determine where in a disclosed
set of percentage ranges is the optimum combination of percentages."); see
In re Aller, 220 F.2d 454, 456-58 (CCPA 1955) ("where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation").
Appellant's arguments do not persuade us otherwise.
Moreover, as discussed above, the basic process for making zirconium
metal by reacting a magnesium reductant with zirconium tetrachloride is
known. Further, the Examiner provided a reasonable basis for one skilled in
the art to combine the cited art with a reasonable expectation that using
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Shoji's magnesium formulation as a reductant in Kwon's method would
result in a suitable zirconium metal. In re O'Farrell, 853 F.2d 894, 904
(Fed. Cir. 1988) ("For obviousness under§ 103, all that is required is a
reasonable expectation of success."). Appellant has not adequately disputed
this.
In the Reply Brief, Appellant argues that data in the Specification
demonstrates the criticality of the 0 to 0.007 wt.% aluminum content recited
in the claims. Reply Br. 3; Spec. i-f 24, Table 3 and Figure 1. We have
considered the portions of the Specification noted by Appellant. However,
Appellant has not explained why the data demonstrate unexpected results.
Appellant, at most, has provided mere attorney arguments and such
arguments of counsel cannot take the place of evidence. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315
(CCPA 1979).
Appellant additionally argues that Kwon does not disclose or teach a
magnesium reductant including greater than 1000 up to 3000 ppm
zirconium. App. Br. 8. However, the Examiner's rejection is based on the
combined teachings of Kwon and Shoji and the Examiner is relying on
Shoji's magnesium formulation comprising 3000 ppm zirconium for this
feature. Non-Final Act. 4; Shoji 3--4. It is well established that the
obviousness inquiry does not ask "whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole." In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en bane); see also In re Keller, 642 F.2d 413, 425
(CCPA 1981) (Stating "[t]he test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
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primary reference."). Appellant's argument is unavailing because it does not
address the rejection presented by the Examiner.
Accordingly, we affirm the Examiner's rejection of claims 1-7 under
35 U.S.C. § 103(a) for the reasons presented by the Examiner and given
above.
DECISION
The Examiner's prior art rejection of claims 1-7 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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